September 19, 2011
Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee
WHEREAS, “Opposition” or “Opposition Proceeding” is defined as a proceeding that meets the minimum guidelines set forth in the 2008 INTA Board resolution regarding actions by the Trademark Office, the third party initiating an action and the holder of the trademark application/registration;
WHEREAS, “Examiner Class” refers to Trademark Office employees or designees responsible for reviewing and approving trademark applications/registrations for publication for Opposition;
WHEREAS, “Approving Examiner” refers to the member of the Examiner Class who approved the trademark application/registration at issue in the Opposition;
WHEREAS, “Decision Maker” refers to an individual or panel of individuals responsible for deciding Oppositions;
WHEREAS, an “Oversight Decision Maker” refers to an individual within the Trademark Office outside the Examiner Class with sufficient status that he or she is given the authority to review and approve Opposition decisions made by members of the Examiner Class. Examples of Oversight Decision Makers are Trademark Office Directors, Trademark Office Registrars, Heads of the Trademark Office, and Trademark Office Judges;
WHEREAS, “Trademark Office” refers to the national or regional agency responsible for issuing the application/registration at issue;
WHEREAS, there are currently a wide variety of Decision Makers in different jurisdictions;
WHEREAS, examples of Decision Makers include:
(a) a single member or panel of members from the Examining Class, with decisions not subject to final review and approval by a member of the Trademark Office other than a member of the Examining Class;
(b) a single member or panel of members from the Examining Class, with decisions subject to final review and approval by a member of the Trademark Office other than members of the Examining Class;
(c) a single member of the Trademark Office other than a member of the Examining Class, such as a Trademark Office Director, Trademark Office Registrar, Head of the Trademark Office or Trademark Office Judge; and
(d) a single Judge in a court of general jurisdiction unaffiliated with the Trademark Office (in jurisdictions in which opposers have the alternative option of bringing opposition in such courts); and
WHEREAS, it is acknowledged that harmonization regarding who the Decision Makers are in each jurisdiction is not necessary so long as certain guidelines are followed to ensure that Decision Makers operate in an objective manner.
BE IT RESOLVED, that Decision Makers for Opposition Proceedings should meet the following guidelines:
(a) The Approving Examiner should not be one of the Decision Makers.
(b) If Examiner Class members are Decision Makers in a particular jurisdiction, ratification by an Oversight Decision Maker should be required before the decision is transmitted to the parties to the Opposition. The Oversight Decision Maker can require the Decision Makers to further analyze or clarify the decision before ratification.
The Opposition and Cancellation Standards & Procedures Subcommittee of the Enforcement Committee considered who should decide Oppositions. This project, however, did not include the question of who should decide any appeals from Oppositions. Definitions of “Opposition” and “Opposition Proceedings” are based on the minimum guidelines contained in the INTA Board Resolution
on September 22, 2008. (These minimum provisions are as follows: (i) the publication of all applied-for trademarks for the purpose of opposition by the aforementioned interested third parties; (ii) the opportunity for such interested third parties to file an opposition in writing during the prescribed time; (iii) notification and the forwarding of a copy of any such opposition to the holder of the applied-for trademark; (iv) the opportunity for the holder of the applied-for trademark to file a response in writing to any such opposition; (v) independent determination of such opposition by person(s) not involved in prior examination of the applied-for trademark; (vi) a written decision by such independent review person(s) notifying all parties as to the outcome of any such opposition; and (vii) the right of any party to the proceeding to appeal such decision.)
The Subcommittee surveyed select jurisdictions in North America, Central America, South America, Europe, Asia, and Africa. (These jurisdictions included Azerbaijan, Benelux, Brazil, Chile, Costa Rica, Ecuador, the E.U., Gambia, Ghana, Jamaica, Kuwait, Laos, Malawi, Mauritius, Mexico, Nicaragua, Saudi Arabia, South Korea, Syria, Turkey, U.A.E., and Uruguay.) The purpose of the survey was to determine who was deciding Oppositions and to identify the relative advantages and disadvantages of using a certain type of personnel as Opposition Decision Maker. This proposed resolution is based on the findings from that research as well as the Subcommittee’s own experiences in various jurisdictions.
The Subcommittee determined that the proposed guidelines are followed in many but not all jurisdictions that offer opposition proceedings. For example, in South Korea, a panel of three trademark examiners decides oppositions, and their decisions are not subject to the oversight proposed in this resolution. In Turkey, a single trademark examiner decides the opposition with no oversight.
The Subcommittee concluded that Oppositions should not be decided by the individual(s) who examined and/or approved the application for registration, in light of a concern that such individuals might be biased by their own decision to permit registration or by information obtained or actions taken during the examination process that would not otherwise be considered in the Opposition proceedings. The Subcommittee therefore concluded that (a) the Approving Examiner should not be among the Decision Makers; and (b) if Decision Makers also belong to the Examiner Class, there should be oversight mechanisms giving Decision Makers outside the Examiner Class the authority to review, confirm, or reverse decisions or to request that the Decision Maker further analyze or clarify a particular issue or the decision analysis.